JUDGMENT - Y.S. JAHAGIRDAR, J.:---Suit is initiated by the plaintiff for an order of injunction restraining the defendant from in any manner infringing the plaintiff's registered trade mark and from using in relation to any medicinal and pharmaceuticals preparations the mark styled as PYKALFIN, which is alleged to be deceptively similar to the plaintiff's trade mark which is registered as PYRALFIN. The present motion is taken out for interim relief of injunction and other consequential directions.

2.The defendant has appeared in the motion and filed a reply.

3.It is alleged by the plaintiffs that they are registered owner of the word Pyralfin, as a trade mark for marketing, sale and production of the drugs for malarial treatment. It is alleged by the plaintiffs that the communication received by one of their dealers they came to know that the defendants are indulging in use of trade mark by name Pykalfin, which is deceptively similar to the one used by the present plaintiffs. The plaintiffs issued notice to the defendant on 10th July, 1996 making a grievance of the said user, which was replied on 27th July, 1996 by which it is alleged by the defendants that they are using the said name 'Pykalfin' since 1989 and have never come across with any registered trade mark of the plaintiffs by name 'Pyralfin'. On receipt of this correspondence the present suit is filed and the injunction claimed on the ground that the action of the defendants as admitted in the reply amounts to infringement of the registered trade mark by using the word 'Pykalfin', which is deceptively similar to the one owned by the plaintiffs and it also amounts to an action by which the defendants are trying to pass off their goods, since both the parties are dealing in the drugs, which is used in malarial treatment.

4.Mr. Shah, the learned Counsel for the plaintiffs relied on the judgment of the Apex Court reported in A.I.R. 1970 Supreme Court 1649 (Ruston and Hornby Ltd. v. Zamindara Engineering Co.)1, has submitted that it is sufficient to establish that the defendants mark is similar and identical with that of the plaintiffs, and such similarity is likely to cause confusion or deception. The learned Counsel has also placed reliance on a judgment of this Court reported in 1992(2) Bom.C.R. 298 (Astra IDL Ltd. v. TTK Pharma Limited)2, to emphasize the submission that the test to decide infringement is on comparison of the two marks and the fact that the concerned drug is a schedule drug need not carry any additional weightage as, submits the learned Counsel, the schedule drugs are available across the counter even without the Doctor's prescription. The Counsel, has therefore, submitted that use of the two words 'Pyralfin" and 'Pykalfin are so similar to each other so as to cause sufficient confusion in the mind of the customers and that by itself entitles the plaintiffs to seek interim order.

5.As against this, Mr. Kadam appearing for the defendants, heavily relied on sub Clause (3) of section 12 of the Trade and Merchandise Marks Act, 1958, which can be reproduced as follows :---

"In case of honest concurrent use or of other special circumstances which, in the opinion of the Registrar, make it proper so to do, he may permit the registration by more than one proprietor of trade marks which are identical or nearly resemble each other (whether any such trade mark is already registered or not) in respect of the same goods or description of goods subject to such conditions and limitations, if any, as the Registrar may think fit to impose."

Mr. Kadam submits that he is entitled to the protection of sub clause (3), since this is a case of honest and concurrent user.

6.Placing reliance on Clause (b) of section 30 of the Act, Mr. Kadam submits that inaction on the part of the plaintiffs amounts to implied consent to the user of the trade mark by the defendants. That also is a factor in favour of the defendants.

Mr. Kadam has also relied on a decision of the Apex Court reporte

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